Melamine Chemicals, Inc.

Trademark Trial and Appeal Board

Aug 11, 1999

EX (T.T.A.B. Aug. 11, 1999)

Hearing: Paper No. 32
October 13, 1998 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 11, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Melamine Chemicals, Inc.
________
Serial Nos. 74/406,483; 74/406,485; 74/546,552; and
74/546,554
_______
Theodore A. Breiner of Breiner & Breiner for applicant.
Carolyn C. Gray, Trademark Examining Attorney, Law Office
101 (Chris Wells, Managing Attorney).
_______
Before Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications have been filed by Melamine Chemicals,
Inc. to register the mark MELAMINE CHEMICALS, INC. and the
mark shown below
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
2
for “chemicals, namely, melamine”1 and “providing technical
consultation services in the field of melamine.”2 In each
application, applicant claims that the mark sought to be
registered has acquired distinctiveness as provided by
Section 2(f) of the Trademark Act.
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that the term sought to be registered is merely
descriptive of the recited goods and services, and has not
acquired distinctiveness. It is the Examining Attorney’s
position that the term, as used in connection with the
goods and services, is generic and hence incapable of
functioning as a mark, and that even if it is capable of
functioning as a mark, the evidence of distinctiveness
submitted by applicant is insufficient to establish that
the designation has acquired distinctiveness as a mark.3

1 Respectively, application serial nos. 74/406,483, filed June
28, 1993, alleging dates of first use of 1968, and 74/546,552,
filed July 7, 1994, alleging dates of first use of 1988.
2 Respectively, application serial nos. 74/546,554, filed July 7,
1994, alleging dates of first use of 1968, and 74/406,485, filed
June 28, 1993, alleging dates of first use of 1988.
3 Applicant contends that genericness is not the basis of the
refusal and that, therefore, the Examining Attorney’s arguments
directed to genericness are “improper and prejudicial.” This
view is not well taken. Early on in the lengthy prosecution of
these applications, the Examining Attorney, although initially
refusing registration on the basis of mere descriptiveness, also
indicated that the applied-for mark appeared to be generic.
Thus, according to the Examining Attorney’s Office actions, she
could not recommend an amendment to proceed under Section 2(f) of
the Act.
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
3
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs in
these consolidated appeals,4 and both were present at an
oral hearing held before the Board.
In support of the refusal, the Examining Attorney
points to the dictionary evidence showing the readily
understood meanings of the individual words in MELAMINE
CHEMICALS, INC. The Examining Attorney concludes that the
composite designation is not registrable.
Applicant argues that its mark sought to be registered
is not merely descriptive, and certainly not generic, and
that it has established a prima facie case of acquired
distinctiveness. Applicant maintains that the declarations
of record are entitled to more evidentiary weight than are
the dictionary definitions.
Applicant has furnished the declaration of Frederic
Huber, applicant’s president and chief executive officer.
Mr. Huber begins by explaining that melamine is a specialty

Accordingly, the Board finds that the issues identified above
are properly before it for consideration. Given the remands and
supplemental briefs in this case, applicant has ample
opportunities to address these issues. Having said this, we
frankly acknowledge that some of the Examining Attorney’s actions
in the involved applications hardly present a model of
examination.
4 The Examining Attorney’s brief is accompanied by dictionary
definitions of which the Board may properly take judicial notice.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
4
chemical with important uses in adhesives, molded plastics,
and paints, and as a fire retardant. Melamine is generally
sold to manufacturers in those industries in large
quantities varying in size from 20 metric tons to 500
metric tons. Due to the nature of the melamine product and
the target customers for melamine, Mr. Huber explains that
applicant does not have a large advertising budget. Mr.
Huber goes on to state, in pertinent part, that applicant
was formed in 1968 and is the third largest manufacturer of
melamine among the ten producers of melamine throughout the
world. According to Mr. Huber, applicant has been using
the marks sought to be registered for its goods and
services since 1968, and that this use has been continuous
and substantially exclusive, pointing out that no other
manufacturer of melamine has used the term MELAMINE
CHEMICALS, INC. to designate its goods or services. Mr.
Huber asserts that MELAMINE CHEMICALS, INC. is not a
generic name for applicant’s goods or services, but rather
is a trademark/service mark recognized in the industry and
by applicant’s customers as indicating source or origin in
applicant. Mr. Huber states that applicant’s sales of

Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
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melamine for the period 1990-1995 are in excess of $231.5
million.
Applicant also has submitted form declarations from
seventeen individuals who are employed by companies which
purchase melamine from applicant. The declarants are
either officers or managers of these companies. After
setting forth the length of time that their companies have
purchased melamine from applicant, the declarants go on to
make the following pertinent statements:
The name MELAMINE CHEMICALS[,] INC. to
me designates [applicant’s] products
and services and distinguishes them
from those of others.
The name MELAMINE CHEMICALS, INC. to me
designates a single source of origin of
melamine and the custom supply of
melamine and providing technical
services in the field of melamine.
To my knowledge, no other manufacturer
or seller of melamine has used or uses
the name MELAMINE CHEMICALS, INC. to
designate its products and services.
The name MELAMINE CHEMICALS, INC. to me
is not a generic designation for
melamine or the services of the custom
supply of melamine and consulting in
the field of melamine.
Applicant further submitted a page from the Official
Gazette, contending that marks more descriptive than
applicant’s have been approved for publication. Applicant
also has relied upon two Canadian registrations which have
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
6
issued for the marks sought to be registered herein, and
applicant’s prior United States registration of MELAMINE
(stylized) for the same goods and services as those here.5
The principal issues to be determined in this case are
(1) whether the designation MELAMINE CHEMICALS, INC. is
generic when used in connection with chemicals, namely
melamine, and technical consultation services in the field
of melamine; (2) whether the designation is merely
descriptive of such goods or services within the meaning of
Section 2(e)(1); and (3) if we find that the designation is
merely descriptive but not generic, whether it has acquired
distinctiveness.
We turn first to the issues of whether MELAMINE
CHEMICALS, INC. is generic, and whether it is merely
descriptive, as used in the context of melamine chemicals
and technical consulting services in the field of melamine
chemicals. A mark is merely descriptive if, as used in
connection with the goods or services in question, it
describes, i.e., immediately conveys information about, an
ingredient, quality, characteristic, feature, etc. thereof,
or if it directly conveys information regarding the nature,
function, purpose, or use of the goods or services. See:

5 Registration No. 2,022,726, issued December 17, 1996, pursuant
to the provisions of Section 2(f). The registration also
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
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In re Abcor Development Corp., 588 USPQ 811, 200 USPQ 215
(CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB
1992); and In re American Screen Process Equipment Co., 175
USPQ 561 (TTAB 1972). A mark is a generic name if it
refers to the class or category of goods or services on or
in connection with which it is used. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. Section 14(3) of the
Act; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991); and Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra. The
Patent and Trademark Office has the burden of establishing
that a mark is generic and thus unregistrable. In re
Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). As to acquired
distinctiveness, applicant has the burden of proof to
establish a prima facie case of acquired distinctiveness.
Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). Evidence
of the relevant public’s understanding of a term may be
obtained from any competent source, including testimony,

includes a disclaimer of the word “melamine.”
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
8
surveys, dictionaries, trade journals, newspapers, and
other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). The
Patent and Trademark Office may, in appropriate cases,
satisfy its evidentiary burden by means of dictionary
definitions showing that “the separate words joined to form
a compound have a meaning identical to the meaning common
usage would ascribe to those words as a compound.” In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12
(Fed. Cir. 1987).
The words comprising applicant’s mark have readily
understood meanings as shown by the dictionary definitions.
The term “melamine” is defined as “a white crystalline
compound used to make melamine resins”, and the term
“chemical” is defined as “a substance produced by or used
in a chemical process.” The designation “Inc.” is an
abbreviation for “Incorporated.”
We find that the present appeal falls squarely under a
line of cases wherein similar issues have been before the
Board. In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988)
[PAINT PRODUCTS CO. for paints held unregistrable]; In re
Industrial Relations Counselors, Inc., 224 USPQ 309 (TTAB
1984) [INDUSTRIAL RELATIONS COUNSELORS for educational
services in the field of industrial relations held
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
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unregistrable]; In re The BOC Group, Inc., 223 USPQ 462
(TTAB 1984) [COMPUTER LEARNING CENTER for educational
services held unregistrable]; and In re E. I. Kane, Inc.,
221 USPQ 1203 (TTAB 1984) [OFFICE MOVERS, INC. for moving
services held unregistrable]. We find that the Examining
Attorney has satisfied her evidentiary burden here by
showing that “the separate words joined to form a compound
have a meaning identical to the meaning common usage would
ascribe to those words as a compound.” In re Gould Paper
Corp., supra at 1111-12. There is nothing left for
speculation or conjecture in the alleged trademark/service
mark. In the present case, “the terms remain as generic in
the compound as individually, and the compound thus created
is itself generic.” Id. Simply put, MELAMINE CHEMICALS,
INC. is a name for melamine chemicals and services directly
related thereto, rather than a mark identifying the source
of the goods and services.
The fact that applicant has obtained two Canadian
registrations of MELAMINE CHEMICALS, INC. (with the words
“MELAMINE” and “CHEMICALS” disclaimed) is not persuasive of
a different result here. This evidence is irrelevant
inasmuch as the determination of genericness must be
governed by the statute and legal principles of this
country. Additionally, the Official Gazette excerpt and
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
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applicant’s prior registration of MELAMINE (stylized) for
the same goods and services as those here are of no moment.6
Each case must be decided on its own facts and, while
uniform treatment under the Trademark Act is highly
desirable, our task here is to determine, based upon the
record before us, whether applicant’s mark is registrable.
Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1631
(TTAB 1998).
In finding that the designation MELAMINE CHEMICALS,
INC. is incapable of identifying applicant’s goods and
services and distinguishing them from similar goods and
services of others, we have considered, of course, all of
the evidence touching on the public perception of this
designation, including the evidence of acquired
distinctiveness. In re Paint Products Co., supra.
Applicant’s evidence of acquired distinctiveness suggests
that at least some purchasers view MELAMINE CHEMICALS, INC.
as a trademark and/or service mark. Nonetheless, if the

6 In any event, we would point out that the United States’
registration, while issued pursuant to Section 2(f), nevertheless
includes a disclaimer of the word “melamine.” See: In re
Creative Goldsmiths of Washington, Inc., 229 USPQ 766, 768 (TTAB
1986) [“[W]e conclude that it is within the discretion of an
Examining Attorney to require the disclaimer of an unregistrable
component (such as a common descriptive, or generic, name) of a
composite mark sought to be registered on the Principal Register
under the provisions of Section 2(f).” (emphasis added)]. See
also: Trademark Manual of Examining Procedure, §§ 1212.02(e) and
1213.02(b).
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
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evidence as a whole establishes--as it does to our
satisfaction--that the term would be primarily perceived as
a generic term, the recognition of the term as a
trademark/service mark by some of applicant’s customers
must be deemed no more than a de facto secondary meaning
that, in legal effect, can neither confer nor maintain
trademark/service mark rights in the designation sought to
be registered. See, e.g., Kellogg Co. v. National Biscuit
Co., 385 U.S. 111, 39 USPQ 296, 299 (1938); J. Kohnstam,
Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437, 126 USPQ 362,
364 (CCPA 1960); and Schulmerich Electronics, Inc. v. J. C.
Deagan, Inc., 202 F.2d 772, 97 USPQ 141, 145-46 (CCPA
1953). See also: McCarthy on Trademarks and Unfair
Competition, § 12:47 (4th ed. 1999).
We recognize that applicant’s use dates back to 1968,
and that applicant’s sales figures would suggest that it
has enjoyed a degree of success. This evidence, however,
demonstrates only the popularity of applicant’s goods and
services, not that the relevant purchasers of such goods
and services have come to view MELAMINE CHEMICALS, INC. as
a source-identifying mark. The issue here is the
achievement of acquired distinctiveness, of which applicant
bears the burden of proof. In re Andes Candies Inc., 478
F.2d 1264, 178 USPQ 156, 158 (CCPA 1973) [“Because of long
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
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use, large sales and advertising, it may be assumed that
some persons might recognize a mark as identifying origin,
but that alone is not enough.”].
The form declarations of seventeen individuals,
although entitled to probative weight, do not tip the
scales in applicant’s favor. The statements undoubtedly
were prepared by counsel and, given applicant’s mark,
represent, at best, de facto recognition. For us, the
unambiguously generic meaning of the words that make up
applicant’s mark is more convincing evidence of likely
perception than the form declarations solicited and offered
by applicant. In re Paint Products Co., supra.
Accordingly, even if the term MELAMINE CHEMICALS, INC.
were found to be not generic, but merely descriptive, given
the highly descriptive nature of the term, we would need to
see a great deal more evidence than applicant has made of
record in order to find that the term has become
distinctive of applicant’s melamine chemicals and related
services. That is to say, the greater the degree of
descriptiveness, the greater the evidentiary burden on the
user to establish acquired distinctiveness. Yamaha Int’l.
Corp. v. Hoshino Gakki Co., supra; and In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., supra. See also: Restate-
ment (Third) of Unfair Competition (1993), § 13, comment e:
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The sufficiency of the evidence offered to prove
secondary meaning should be evaluated in light of
the nature of the designation. Highly
descriptive terms, for example, are less likely
to be perceived as trademarks and more likely to
be useful to competing sellers than are less
descriptive terms. More substantial evidence of
secondary meaning thus will ordinarily be
required to establish their distinctiveness.
Indeed, some designations may be incapable of
acquiring distinctiveness.
Lastly, the fact that applicant may be the first or
the only one using MELAMINE CHEMICALS, INC. in the field is
not dispositive. In re Central Sprinkler Co., 49 USPQ2d
1194, 1199 (TTAB 1998).
Decision: The refusals to register are affirmed.
T. J. Quinn
C. E. Walters
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74/406,483; 74/406,485; 74/546,552; and 74/546,554
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